Articles Posted in Intellectual Property

The always-fascinating EconTalk podcast had as its guest on January 18 “sneakerhead” Josh Luber of, a site dedicated to tracking the secondary market in sneakers. There is a thriving market on Ebay and other sites in sneakers, particularly Nike basketball shoes. Just about every week, Nike releases small production runs of sneaker models to stores like Athlete’s Foot. They are intended to be collectible: maybe unique color combinations, or maybe a new run of a popular older model. People line up outside shoe stores in malls across the country every Saturday morning, trying to get a pair. They almost always resell them, sometimes for many times the already-inflated MSRP. The market is larger than you might think: in 2014, more than 125,000 individual resellers made more than $1.2 billion in profits over and above the retail price of the shoes.

And, of course, every year Nike releases the newest model of Air Jordans, and the same thing happens: hundreds of thousands sell out very quickly for full retail, and many of those also end up in the secondary market, selling for two to five times the retail price.

Listening to the discussion of sneakers made me think about trade secrets, an aspect of intellectual property law I haven’t discussed here before. Idaho’s intellectual property laws include a version of the Uniform Trade Secrets Act, which allows owners of trade secrets some means of protecting them.

Going through the Trademark Official Gazette of December 29 was a little disheartening at first. It was the usual mish-mash of made-up words that marketers hope will become famous trademark through the expense of lots of advertising dollars, and I was despairing of finding anything interesting until I came across this:


There is usually a fight going on between the marketing people and the trademark protection staff over what to call a product. The marketers often want to give it a name which describes some desirable quality of the product. The trademark staff, on the other hand, know that marks which are merely descriptive of the product get very little protection, and may not be registrable. The trademark examiners at the Patent and Trademark Office are diligent about not allowing trademark owners to remove from the lexicon common words that competitors might want to use to describe their products. So a word that is the generic name of a product cannot be used as a trademark; words that are descriptive of the product can be used as trademarks but may not be registrable and will get very little protection. The compromise is to find words that are suggestive of a desirable quality, but not directly descriptive of the product. Or, of course, you can make up a word, like XEROX, or use a common word that is not related in any way to the product, like APPLE for computers.

With SHEER AND INNOCENT, there was clearly a compromise. A product might be sheer, but can a thing ever be described as innocent? Take them together, and the mark will be suggestive and eligible for registration, even though part of it might be descriptive. And, yes, the registrant in this case had to disclaim any rights in the word “sheer” apart from its use as part of SHEER AND INNOCENT as a whole. A disclaimer of this sort is an admission that, in most cases, use of the word “sheer” in another trademark would not be an infringement.

Copyright cases aren’t usually a lotta laughs, but then, they aren’t usually about this:

The heirs of Bud Abbot and Lou Costello claim to own the copyright in their famous “Who’s on First?” bit. They undoubtedly own the copyright on two filmed versions of the skit, because Universal Pictures gave them the copyrights on clips from two 1940s movies in which they performed it. But there are other filmed versions of the skit which are now in the public domain, the copyright protection on the movies having expired, and it is questionable whether anyone “owns” a copyright in the original skit, or indeed whether Abbot and Costello even wrote it.

“If you want to motivate people, don’t talk about death!” So said Rocky the Rhode Island Red in the movie Chicken Run, which these guys apparently missed:


This is another Madrid Protocol US registration issued to Frozenbyte, Inc., of Helsinki, Finland. Those Finns must be a fun bunch… What do you sell under this cheerful mark?

“Video disks and video tapes with recorded animated cartoons; apparatus for recording, transmission or reproduction of sound or images; calculating machines, data processing equipment … blank compact discs with read-only memory for sound or video recording; DVDs and audio digital tapes featuring animated cartoons; computer game programs and software; computer memories; computer operating programs, recorded; computer peripheral devices; recorded computer programs for use in creating computer games, fantasy games, animated cartoons; downloadable computer programs for use in creating computer games, fantasy games, animated cartoons; recorded computer software for use in creating computer games, fantasy games, animated cartoons; disk drives for computers; blank magnetic disks; downloadable image files containing cartoons and fantasy images; downloadable music files; downloadable ring tones for mobile phones; blank record disks; magnetic data media, namely, blank audio tapes; mechanism for coin operated apparatus; fantasy games, animated cartoons; computer mouse; mouse pads; blank optical data carriers; blank optical discs; simulators for the steering and control of vehicles; blank USB flash drives; blank video cassettes; video game cartridges; video game programs; video game software; wrist rests for use with computers; computer game programs for gaming machines, namely, slot machines and video lottery terminals …

It’s usually interesting when a trademark case makes the news, and the court decision released on Tuesday this week is no exception.  The United States Court of Appeals for the Federal Circuit held that a provision of the U.S. trademark statute (known as the Lanham Act) is unconstitutional. Specifically, the court struck down the section of the Act that allows the Trademark Office to deny registration to a trademark that it considers to be “scandalous, immoral, or disparaging.”

Nine of the twelve judges on the court signed an opinion which begins about as strongly as an opinion can:

“Section 2(a) of the Lanham Act bars the Patent and Trademark Office (“PTO”) from registering scandalous, immoral, or disparaging marks. 15 U.S.C. § 1052(a). The government enacted this law—and defends it today— because it disapproves of the messages conveyed by disparaging marks. It is a bedrock principle underlying the First Amendment that the government may not penalize private speech merely because it disapproves of the message it conveys.”

It is generally a good idea to watch for infringing uses of your trademarks, and respond when you find them. Failure to police infringing uses can result in your mark losing its ability to distinguish between providers. In the extreme case, it can become a generic term — that’s what happened to one-time trademarks like ELEVATOR and ASPIRIN.

Smart trademark owners know this, and have a program in place to watch for potentially infringing uses. It is easy enough to search through applications at the Trademark Office, or to look through the Trademark Official Gazette for potentially infringing uses that have already been approved by the Office’s examiners. In the last 20 years, search engines like Google and Yahoo! have become critical means of finding the infringing users, especially the ones who may not have filed for a trademark registration. A company with an online presence has a worldwide presence, and in the internet age an infringer doesn’t have to be next door to hurt your business.

It is also becoming increasingly important to watch domain name registrations, especially since hundreds of new generic top-level domains (gTLDs) started going active in 2014. Everyone is familiar with the traditional gTLDs, such as .com, .net, and .org. There were 23 gTLDs in 2013. By the end of 2014, the powers that be in the internet had approved more than 750 new gTLDs, and they are expected to approve hundred more in the next year or two. These include hundred tied to specific brands, like .sony, .dell, .target, and .netflix. There are many more that are more generic in their focus, such as .baby, .family,  .adult, .sucks, and .mobile.

For years, the auto industry has used copyright law and anti-hacking provisions of the Digital Millennium Copyright Act of 1998 to stop hotrodders from hacking into the software that controls modern cars. That is about to change, thanks to exemptions from the DMCA which were approved last week by the U.S. Copyright Office. Under the exemptions, car buffs and researchers will be able to break into and, to some extent, modify the software that controls cars without violating the law.  Whether doing so will void the warranty will probably still depend on the automakers.

A lot of what I do in this field involves helping people figure out what they need. “Intellectual property” is a fairly broad topic with a lot of different kinds of rights lumped together in a way that can lead to confusion. I have had people tell me they want to file a trademark on the copyright for their patent. If that’s you, call me and make an appointment. The initial consultation is free. I may end up referring you to a patent lawyer to prepare and file a patent application, but we may figure out that you need to register a copyright, or have an investor sign a non-disclosure agreement, or send a cease-and-desist letter to an infringer. We won’t know until we talk.

For instance, suppose you had a great idea for an invention. Your first thought may be to pull out a credit card and send a lot of money to one of the invention commercialization companies that advertise on the radio. They will take your money and file a provisional patent application, or maybe a design patent application. Those may not be what you need,  but these businesses are set up to file applications, not give you trustworthy advice. A provisional patent application merely kicks the can down the road for a year, at the end of which you will need to shell out more money to actually file a full patent application. It may be that you would have been better off keeping your idea secret for a year. A design patent, on the other hand, may be inappropriate for your invention, and may actually cause you to lose your rights in  your invention — the exact opposite of what a patent is supposed to do. Your money may be better spent elsewhere. A consultation with a lawyer may steer you in the right direction.

(Disclaimer: I am not a patent lawyer. I cannot file patents, I will not do a patent search, and I will not advise you whether or not an invention is patentable.)


I think this guy has too many oars in the water: Published for registration under the Madrid Protocol to owner Francesco Cirillo of Berlin, Germany:

trademarkFirst, there’s nothing that draws customers like the sound of a screaming toddler or a college student who has stepped out of his safe place. But what the heck is he trying to sell with this mark? According to his application he is using the mark for:

“Recorded content… featuring music and animation; … audiovisual receivers; magnets, magnetizers and demagnetizers for magnetic tapes; … electrical integrated control systems for use in the field of waste water treatment, information management and communications; apparatus, instruments in the nature of electricity conduits and cables for electricity; optical devices, enhancers and correctors, namely, optical lenses; safety, security, protection and signally devices, namely, cables for optical signal transmission; diving equipment, namely, helmets; navigation, guidance, tracking, targeting and map making devices, namely, global positioning systems; measuring, detecting and monitoring instruments, indicators and controllers, namely, computer hardware; scientific research and laboratory apparatus, educational apparatus and simulators, namely, electronic clinicians training simulators; and parts and fittings for all the aforementioned goods…”

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